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[Federal Register Volume 89, Number 241 (Monday, December 16, 2024)]
[Notices]
[Pages 101641-101643]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-29523]

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NATIONAL SCIENCE FOUNDATION

Request for Comments on NSF's Proposed Intellectual Property 
Options

AGENCY: U.S. National Science Foundation.

ACTION:  Request for comments.

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SUMMARY: The U.S. National Science Foundation (NSF) seeks public 
comments to inform the experimental implementation of new intellectual 
property (IP) provisions to be used in public-private partnerships, 
particularly those advancing research and development, that include co-
funding by private partners. NSF is committed to fostering innovation 
and promoting the translation of research into practical applications. 
To enhance the effectiveness of public-private partnerships, NSF seeks 
to implement a set of options for IP provisions that provide greater 
flexibility and balance the interests of both academia and industry. 
Recent engagements, including the 2023 NSF-Industry Partnership Summit 
and subsequent listening sessions, have highlighted the need for 
optional IP strategies that can adapt to the unique requirements of 
various funded projects. NSF intends to incorporate these IP options 
into partnership agreements involving industry and/or non-profit 
organizations for funding opportunities whose funded awards may result 
in the generation of IP. Through this Request for Comments (RFC), NSF 
invites input from a wide range of stakeholders, including industry, 
academia, non-profit organizations, other government agencies, and 
other interested parties.

DATES: Interested persons or organizations are invited to submit 
comments on or before 11:59 p.m. (EST) on Friday, January 24, 2025.

ADDRESSES: To respond to this Request for Comments, please use the 
official submission form available at: https://airtable.com/app9KPUhqR2lAb4Zf/pag9d0QhLcOXkGlud/form.
    Respondents only need to provide feedback on one or more questions 
of interest or relevance to them. Each question is voluntary and 
optional. The response to each question has a 4,000-character limit 
including spaces.

FOR FURTHER INFORMATION CONTACT: For further information, please direct 
questions to Allen Walker through email at [email protected], 
phone at 703-292-2291, or mail at U.S. National Science Foundation, 
ATTN: Allen Walker, 2415 Eisenhower Avenue, Alexandria, VA 22314, USA.

SUPPLEMENTARY INFORMATION: The 2023 NSF-Industry Partnership Summit and 
subsequent engagements revealed differing viewpoints in stakeholders' 
perspectives regarding NSF's existing IP terms. In response, the 
Directorate for Technology, Innovation and Partnerships (TIP) has 
developed a series of IP grant-of-rights options to address these 
concerns. These options are informed by the Bayh-Dole Act and aim to 
promote the practical application and commercialization of federally 
funded research while preserving potential access to the IP for the 
U.S. Government.
    Below is the language for each of the three IP grant-of-rights 
options to be used in partnership agreements. These IP options can be 
tailored according to the particular research area and the specific 
terms and conditions agreed upon between NSF and the partner(s) in a 
particular public-private partnership.

A. Research License With Commercial Option

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by Federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part 
401. Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and

[[Page 101642]]

interest of Intellectual Property (IP) that directly results from 
activities funded by NSF (``Project IP'') is retained by the entity 
that created it. While recipients are permitted to temporarily withhold 
the publication of data and software related to inventions to 
facilitate patent application filings, NSF terms and conditions require 
the subsequent prompt publication of all research outputs--including 
results, data, and software--generated in the performance of the 
research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for research purposes for a period of 18 months 
from the date of disclosure of the Project IP. This license shall not 
extend to any IP other than Project IP. This 18-month period is 
structured as follows:
    1. Notice Period: For the first 12 months after disclosure of the 
Project IP, any partner shall have a right to indicate in writing that 
they are exercising their Right of First Negotiation (``ROFN'') for an 
opportunity to secure an exclusive commercial license during the 
Negotiation/Option Period.
    2. Negotiation/Option Period: Following the 12-month Notice Period, 
there shall be a 6-month period during which partners so exercising 
their ROFN may negotiate for an exclusive commercial license.
    If an exclusive commercial license is secured by one partner during 
the Negotiation/Option Period, all other partners' rights shall 
automatically become a perpetual, non-exclusive, royalty-free license 
for research purposes only.
    If no exclusive commercial license is secured by the end of the 
Negotiation/Option Period, the non-exclusive license granted herein 
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

B. Convertible Commercial License

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by Federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part 
401. Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and interest of Intellectual Property (IP) that directly 
results from activities funded by NSF (``Project IP'') is retained by 
the entity that created it. While recipients are permitted to 
temporarily withhold the publication of data and software related to 
inventions to facilitate patent application filings, NSF terms and 
conditions require the subsequent prompt publication of all research 
outputs--including results, data, and software--generated in the 
performance of the research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for both research and commercial purposes for a 
period of 18 months from the date of disclosure of the Project IP. This 
license shall not extend to any IP other than Project IP. This 18-month 
period is structured as follows:
    1. Notice Period: For the first 12 months after disclosure of the 
Project IP, any partner shall have the have a right to indicate in 
writing that they are exercising their Right of First Negotiation 
(``ROFN'') for an opportunity to secure an exclusive commercial license 
during the Negotiation/Option Period.
    2. Negotiation/Option Period: Following the 12-month Notice Period, 
there shall be a 6-month period during which partners so exercising 
their ROFN may negotiate for an exclusive commercial license.
    If an exclusive commercial license is secured by one partner during 
the Negotiation/Option Period, all other partners' rights shall 
automatically convert into a perpetual non-exclusive, royalty-free 
license for research purposes only.
    If no exclusive commercial license is secured by the end of the 
Negotiation/Option Period, the non-exclusive license granted herein 
shall, for all partners, automatically convert into a perpetual non-
exclusive, royalty-free license for research purposes only.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

C. Research-Only License

    The disposition of rights to inventions or works of authorship made 
during NSF-funded research is governed by Federal law, regulation, and 
policy, including but not limited to, 35 U.S.C. 200-212 and 37 CFR part 
401. Pursuant to applicable laws, regulations, and policies, the entire 
right, title, and interest of Intellectual Property (IP) that directly 
results from activities funded by NSF (``Project IP'') is retained by 
the entity that created it, following applicable Federal law. While 
recipients are permitted to temporarily withhold the publication of 
data and software related to inventions to facilitate patent 
application filings, NSF terms and conditions require the subsequent 
prompt publication of all research outputs--including results, data, 
and software--generated in the performance of the research.
    All partners are entitled to a non-exclusive, royalty-free license 
for use of Project IP for research purposes. This license shall not 
extend to any intellectual property other than Project IP.
    Pursuant to the Bayh-Dole Act, NSF is entitled to a non-exclusive, 
irrevocable, paid-up license throughout the world for use of Project IP 
that directly results from activities funded by NSF.

Questions for Public Comment

    NSF welcomes comments from the public on any issues that are 
relevant to this topic, and is particularly interested in answers to 
the following questions:
    Overall Impact: How do you believe these proposed IP options will 
impact innovation, technology transfer, and economic growth?
    Balance: Do these options ensure a balanced distribution of IP 
rights between academia and industry partners? How can the proposed IP 
options be further refined to ensure maximum balance in IP 
arrangements?
    Flexibility: What additional flexibility should be incorporated 
into the IP options to accommodate and incentivize a range of research 
initiatives?
    Adoption: What strategies could NSF employ to encourage widespread 
adoption of these IP options among potential partners?
    Barriers: What potential barriers exist to implementing these IP 
options, and how might they be overcome?
    Translation and Incentives: Do the proposed IP options effectively 
promote the translation of research into practice while incentivizing 
industry participation and ensuring benefits for universities and 
researchers? What improvements could be made to enhance these aspects?
    Additional Options: Are there other IP grant-of-rights options or 
frameworks that NSF should consider to better support collaborative 
research initiatives and facilitate research impact?
    NSF, at its discretion, will use the information submitted in 
response to this RFC to help inform future program directions, new 
initiatives, and potential funding opportunities. The information 
provided will be analyzed, may appear in reports, and may be shared 
publicly on agency websites. Respondents are advised that the 
government is under no obligation to acknowledge receipt of the 
information or provide feedback to

[[Page 101643]]

respondents with respect to any information submitted. No proprietary, 
classified, confidential, or sensitive information should be included 
in your response submission. The government reserves the right to use 
any non-proprietary technical information in any resultant 
solicitations, policies, or procedures.

(Authority: Pub L. 117-167.)

    Dated: December 11, 2024.
Suzanne H. Plimpton,
Reports Clearance Officer, National Science Foundation.
[FR Doc. 2024-29523 Filed 12-13-24; 8:45 am]
BILLING CODE 7555-01-P
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